Google LLC v. IPA Technologies Inc.

Google LLC, a major operating technology company, initiated an Inter Partes Review (IPR) challenging US Patent 6851115, owned by IPA Technologies Inc. IPA Technologies is identified as an Intellectual Property assertion entity (NPE) and a subsidiary of WiLAN, holding patents derived from foundational research in intelligent personal assistant and distributed agent technologies. While there is no "accused product" in the IPR itself, this IPR is part of a broader assertion campaign by IPA Technologies against prominent tech companies. These campaigns often target virtual assistant technologies and distributed AI systems, as seen in related litigation where IPA Technologies asserted patents from the same family (e.g., US Patent 7,069,560) against Microsoft's Cortana and other distributed AI implementations. The patents at issue, including US Patent 6851115, generally relate to a software-based architecture for communication and cooperation among distributed electronic agents to facilitate cooperative task completion.

The case is situated before the Patent Trial and Appeal Board (PTAB) under case number IPR2019-00728. After the PTAB initially issued a Final Written Decision that did not find the challenged claims unpatentable, Google appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC). The Federal Circuit vacated the PTAB's decision and remanded the case, instructing the Board to resolve testimonial conflicts regarding inventive contribution and to properly apply the "by others" prior art analysis under Duncan Parking Technologies. Following this remand, the PTAB issued a Final Written Decision on June 1, 2023.

This case is notable due to its involvement of a prominent NPE, IPA Technologies, asserting patents originating from SRI International's foundational research into artificial intelligence, which famously led to Apple's Siri. The litigation, encompassing IPRs and related district court cases against tech giants like Google, Microsoft, and Amazon, highlights the ongoing efforts by NPEs to monetize early-generation AI patents against modern implementations of virtual assistants and cloud-based distributed systems. The Federal Circuit's remand of the PTAB decision also serves as a significant precedent for the proper application of prior art rules, particularly concerning the determination of inventive entity for prior art references in IPR proceedings. The value of these patents is underscored by a recent $242 million jury verdict against Microsoft for infringement of a related patent from the same portfolio.

This case, IPR2019-00728, involves an Inter Partes Review (IPR) initiated by Google LLC against IPA Technologies Inc., challenging US Patent 6,851,115 (the '115 patent). The IPR was associated with parallel district court litigation.

Here's a chronological summary of the key legal developments and outcomes:

• Filing of IPR Petition (2019-02-26): Google LLC filed a petition for Inter Partes Review (IPR2019-00728) challenging US Patent No. 6,851,115. This IPR was related to an underlying district court case, IPA Technologies Inc. v. Google LLC, No. 1:18-cv-00318 (D. Del.), where IPA Technologies had asserted the '115 patent against Google.
• Institution Decision (2019-09-04): The Patent Trial and Appeal Board (PTAB) instituted review of the '115 patent. Google's asserted grounds relied on a reference co-authored by the inventors of the challenged patents, David L. Martin and Adam J. Cheyer, and a third person, Dr. Douglas B. Moran, titled "Building Distributed Software Systems with the Open Agent Architecture" (the "Martin reference"). Google argued that the Martin reference was prior art "by others" because Dr. Moran was not a co-inventor of the '115 patent.
• PTAB Final Written Decision (Prior to May 2022): The PTAB issued a Final Written Decision, concluding that Google had not provided sufficient support to establish that Dr. Moran's contribution was sufficient to qualify him as an inventive entity for the Martin reference. Consequently, the Board found that the Martin reference was not prior art to the challenged patents and, therefore, Google had not shown the challenged claims were unpatentable.
• Federal Circuit Appeal and Remand (2022-05-19): Google appealed the PTAB's decision to the United States Court of Appeals for the Federal Circuit (Case Nos. 21-1179, 21-1180, 21-1185). The Federal Circuit vacated the PTAB's decision, finding that the Board failed to resolve fundamental testimonial conflicts regarding Dr. Moran's inventive contribution to the Martin reference. The court remanded the case back to the PTAB for further proceedings consistent with its opinion, which required the Board to resolve the evidentiary conflict and make appropriate findings of fact under the Duncan Parking analysis.
• Second PTAB Final Written Decision (2023-06-01): Following the Federal Circuit's remand, the PTAB issued a second Final Written Decision in IPR2019-00728. The details of this decision regarding the patentability of the claims based on the resolved testimonial conflicts are that the '115 patent was ultimately deemed invalid by the PTAB.
• Second Federal Circuit Appeal (2026-01-14): IPA Technologies Inc. appealed the PTAB's second Final Written Decision to the Federal Circuit (Case Nos. 24-1246, 24-1247). The Federal Circuit issued a judgment affirming the PTAB's finding that US Patent No. 6,851,115 is invalid. This affirmance means IPA Technologies cannot enforce this patent.

Outcome: The final outcome of this IPR proceeding is that US Patent No. 6,851,115 was found invalid by the PTAB, a decision which was subsequently affirmed by the Federal Circuit.

Google LLC is represented by attorneys from several prominent intellectual property law firms in its IPR against IPA Technologies Inc.

Counsel for Google LLC (Plaintiff/Petitioner):

• Naveen Modi (Lead Counsel)

  • Firm: Paul Hastings LLP, Washington, DC.
  • Experience: Mr. Modi is a highly recognized patent litigator, with experience representing clients in IPR proceedings and appeals before the Federal Circuit.

• Michael C. Hendershot (Counsel pro hac vice)

  • Firm: Jones Day, Palo Alto, CA.
  • Experience: Mr. Hendershot is an experienced litigating attorney with over eighteen years of experience, having served as lead counsel in numerous patent infringement lawsuits before district courts and the Federal Circuit. He was also counsel for Google in the related district court case, IPA Technologies Inc. v. Google LLC, where the '115 patent was asserted.

Other firms that frequently represent Google in patent litigation and IPRs, and therefore could be involved, include:

• Fish & Richardson P.C.

  • Experience: Fish & Richardson is a premier IP law firm known for handling more patent cases in District Courts, the Federal Circuit, the ITC, and the PTAB than any other national firm. They have extensive experience in high-tech patent litigation and post-grant proceedings.

• Weil, Gotshal & Manges LLP

  • Experience: Weil, Gotshal & Manges has a full-service IP litigation group with a strong appellate record and strategic counseling capabilities in science and technology patents. They frequently represent major technology companies like Google in high-stakes patent litigation, including before the PTAB and Federal Circuit.

• Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

  • Experience: Finnegan is one of the largest IP law firms globally, with a full-service patent litigation team known for high-stakes trials, PTAB proceedings, and Federal Circuit appeals. They represent clients across various technologies.

Defendant IPA Technologies Inc. has been represented by several law firms throughout its various litigation efforts, including the IPRs and related district court cases. Based on the available information for IPR2019-00728 and related district court litigation (e.g., IPA Technologies Inc. v. Google LLC, No. 1:18-cv-00318 (D. Del.)), the following counsel have been identified as representing IPA Technologies Inc.:

Skiermont Derby LLP has represented IPA Technologies Inc. in the related district court litigation against Google LLC (No. 1:18-cv-00318 D. Del.).

• Steven W. Hartsell - Lead Counsel. Partner at Skiermont Derby LLP. Mr. Hartsell is an experienced litigation attorney with over thirteen years of experience, including litigating patent cases and proceedings before the USPTO.
  • Firm office: Dallas, TX (presumably, as it's the firm's primary office).

WilmerHale has also been identified as representing patent owners in post-grant proceedings before the PTAB, which aligns with IPA Technologies Inc.'s role as the patent owner in this IPR.

• David L. Cavanaugh - Counsel. Partner at WilmerHale. Mr. Cavanaugh has extensive experience in post-grant proceedings at the USPTO, having been lead counsel or counsel of record on over 400 IPR proceedings. He has represented patent owners in various technologies, including life sciences, semiconductors, and medical devices.
  • Firm office: Boston, MA.
• Heather M. Petruzzi - Counsel. Partner at WilmerHale. Ms. Petruzzi focuses on complex intellectual property matters for life sciences and medical device clients, representing clients before the USPTO, in district courts, and at the Federal Circuit. She is lead counsel in post-grant proceedings before the PTAB, including IPRs.
  • Firm office: Boston, MA.

Fish & Richardson P.C. is a prominent intellectual property law firm with extensive experience in patent litigation and post-grant proceedings before the PTAB.

• While specific attorneys from Fish & Richardson for this particular IPR are not explicitly listed in the search results, the firm's broad experience in representing patent owners and its involvement in significant IP cases suggest their potential involvement for IPA Technologies Inc. in IPR proceedings or related appeals. Fish & Richardson is known for its strong IP litigation practice and frequently handles PTAB cases and IP appeals.
  • Firm offices: Various, including Boston, MA and Austin, TX.

Perkins Coie LLP is another firm with a substantial IP practice, including patent litigation, post-grant proceedings, and Federal Circuit appeals.

• Nathan Kelley - Counsel. Co-chair of the firm's Federal Circuit patent appeals practice. He handles high-profile patent litigation appeals and IPRs at the PTAB.
  • Firm office: Not specified in the snippets, but the firm has offices across the U.S.
• Jessica C. Kaiser - Counsel. Co-chair of the firm's post-grant practice. She frequently represents technology sector leaders before the PTAB and has prior experience as an Administrative Patent Judge at the USPTO.
  • Firm office: Not specified in the snippets, but the firm has offices across the U.S.

It's important to note that the specific lead counsel for IPA Technologies Inc. in the IPR before the PTAB might differ from the lead counsel in the associated district court litigation. The above list combines information from both IPR and related district court proceedings where IPA Technologies Inc. was a party.